David Z., Inc. v. Admin c/o LaPorte Holdings
Claim Number: FA0603000653829
Complainant is David Z., Inc. (“Complainant”), represented by Baila H. Celedonia, of Cowan, Liebowitz & Latman, P.C., 1133 Avenue of the Americas, New York, NY 10036-6799. Respondent is Admin c/o LaPorte Holdings (“Respondent”), 5482 Wilshire Blvd #1928, Los Angeles, CA 90036.
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <davidzinc.com>, registered with Nameking.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 6, 2006; the National Arbitration Forum received a hard copy of the Complaint on March 8, 2006.
On March 7, 2006, Nameking.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <davidzinc.com> domain name is registered with Nameking.com, Inc. and that Respondent is the current registrant of the name. Nameking.com, Inc. has verified that Respondent is bound by the Nameking.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On March 9, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 29, 2006 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@davidzinc.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 4, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <davidzinc.com> domain name is confusingly similar to Complainant’s DAVID Z mark.
2. Respondent does not have any rights or legitimate interests in the <davidzinc.com> domain name.
3. Respondent registered and used the <davidzinc.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Since 1984, Complainant, David Z., Inc., has owned and operated retail shoe stores in New York City, offering fashionable brand name shoes and boots. In connection with its business, Complainant holds the domain name registration for the <davidz.com> domain name, and uses the domain name to operate a website offering the online sale of its retail footwear.
Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the DAVID Z mark. Complainant first registered the DAVID Z mark with the USPTO on January 19, 1999 (Reg. No. 2,218,757).
Respondent registered the <davidzinc.com> domain name on February 11, 2004. Respondent’s disputed domain name resolves to a website offering links to other online retailers of footwear, which operate in direct competition with Complainant.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The Panel finds that Complainant’s registration of its DAVID
Z mark with the USPTO sufficiently demonstrates Complainant’s rights in the
mark pursuant to Policy ¶ 4(a)(i). See VICORP
Restaurants, Inc. v. Triantafillos, FA 485933 (Nat. Arb. Forum July 14,
2005) (“Complainant has established rights in the BAKERS SQUARE mark by
registering it with the United States Patent and Trademark Office (“USPTO”).”);
see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb.
Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish
Complainant's rights in the BLIZZARD mark.”).
Complainant has also established
that Respondent’s <davidzinc.com>
domain name is confusingly similar to Complainant’s DAVID Z mark. Respondent’s disputed domain name
incorporates Complainant’s registered mark in its entirety, adding only the
generic term “inc,” and the generic top-level domain “.com.” Such alterations do not avoid the creation
of confusing similarity between Complainant’s mark and Respondent’s disputed
domain name. See Magnum Piering, Inc. v.
Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (finding that the generic term
“INC” does not change the confusing similarity); see also Rollerblade, Inc. v.
McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the
domain name such as “.net” or “.com” does not affect the domain name for the
purpose of determining whether it is identical or confusingly similar).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant bears the initial burden of establishing that Respondent lacks any rights and legitimate interests in the disputed domain name. However, if Complainant sufficiently demonstrates a prima facie case, the burden shifts to Respondent to prove that it has rights or legitimate interests with respect to the domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”). The Panel finds that Complainant has established a prima facie case and will evaluate the evidence on record to determine whether Respondent has rights or legitimate interests in the domain name under Policy ¶ 4(c).
Respondent is using the <davidzinc.com> domain name to operate a website providing links to third-party websites that are not affiliated with Complainant and that offer retail footwear in direct competition with Complainant. Consequently, Respondent’s use of the disputed domain name does not constitute either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).
Furthermore, the Panel finds no evidence on record indicating that Respondent is commonly known by the <davidzinc.com> domain name. Rather, the WHOIS information identifies Respondent as “LaPorte Holdings.” Thus, Respondent has not established rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent registered and is using the <davidzinc.com> domain name in connection with a website
offering links to retail footwear websites in competition with Complainant’s
business. In light of both the
confusing similarity between Respondent’s domain name and Complainant’s mark
and Respondent’s offering of links to competing online footwear retailers,
Internet consumers could easily confuse Respondent’s website with a website
operated by or affiliated with Complainant.
Thus, the evidence on record suggests that Respondent has intentionally
attempted to attract, for commercial gain, Internet users to its website by
creating a likelihood of confusion with Complainant’s mark as to the source,
sponsorship, or affiliation of its website pursuant to Policy ¶ 4(b)(iv). See
G.D. Searle & Co. v. Celebrex
Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the
respondent registered and used the domain name in bad faith pursuant to Policy
¶ 4(b)(iv) because the respondent was using the confusingly similar domain name
to attract Internet users to its commercial website);
see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11,
2003) (“Respondent registered a domain name confusingly similar to
Complainant's mark to divert Internet users to a competitor's website. It is a
reasonable inference that Respondent's purpose of registration and use was to
either disrupt or create confusion for Complainant's business in bad faith
pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”)
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <davidzinc.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
April 18, 2006
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum